- Microsoft Corporation v. Smart Skins LLCRehearing deniedPTAB · Nov 21, 2017 · IPR2016-00404 · APJ Robert J Weinschenk · IPR · Rehearing
The Board denied Microsoft's rehearing request, maintaining that claims 1, 12, 13, 15, 23, and 24 are entitled to the July 17, 2001 priority date and that Janik and Kehoe are not prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“part of U.S. Patent Application No. 10/087,098 (Ex. 1014, “the ’098 application”), which was filed on March 1, 2002, and that the ’864 patent and the ’098 application claim priority to U.S. Provisional Patent Application No. 60/306,326 (Ex. 1015, “the ’326 provisional”), which was filed on July 17, 2001. Dec. 14–15 (citing Paper 1 (“Pet.”), 10; Paper 14 (“PO Resp.”), 8; Ex. 1001; Ex. 1014, 2). We determined that Smart Skins LLC (“Patent Owner”) had shown sufficiently that the challenged claims of the ’864 patent are entitled to a filing date of July 17, 2001, because the disclosures of the ’098 application and the ’326 provisional (collectively, “the priority applications”) provide written description support for the challenged claims of the ’864 patent. Dec. 14–21.” slip op. at 3
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artPriority date awardedDecided for patent owner
“established by Patent Owner for the challenged claims (July 17, 2001) predates the earliest filing dates of Janik and Kehoe established by Petitioner (September 4, 2001, and October 24, 2001, respectively). Dec. 22. We determined that, as a result, Petitioner had not shown sufficiently that either Janik or Kehoe qualifies as prior art to the challenged claims under 35 U.S.C. § 102(e). Dec. 22. Therefore, we concluded that Petitioner had not shown by a preponderance of the evidence that claims 1, 12, 13, 15, 23, and 24 would have been obvious over Janik and Kehoe. Id. at 23. Petitioner argues that, because we erred in determining that the challenged claims of the ’864 patent are entitled to the benefit of the filing date of the priority applications, we should reconsider our determination that Janik and Kehoe are not prior art. Req. Reh’g 15. For the reasons discussed above, we maintain our determination that the challenged claims are entitled to the benefit of the filing date of the priority applications. Thus, we also maintain our determination that Petitioner had not shown sufficiently that either Janik or Kehoe qualifies as prior art to the challenged claims under 35 U.S.C. § 102(e).” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“challenged claims of the ’864 patent are entitled to the benefit of the filing date of the priority applications, we should reconsider our determination that Janik and Kehoe are not prior art. Req. Reh’g 15. For the reasons discussed above, we maintain our determination that the challenged claims are entitled to the benefit of the filing date of the priority applications. Thus, we also maintain our determination that Petitioner had not shown sufficiently that either Janik or Kehoe qualifies as prior art to the challenged claims under 35 U.S.C. § 102(e). Petitioner requests that we address the asserted ground of unpatentability based on Janik and Kehoe “conditionally,” even if we do not change our determination regarding the priority date of the challenged claims. Req. Reh’g 15. We are not persuaded, though, that it would be an efficient use of resources to address all of the parties’ arguments and evidence regarding the asserted ground of unpatentability based on Janik and Kehoe when Petitioner has not met its burden to show that Janik and Kehoe are prior art to the challenged claims. Therefore, we decline to “conditionally” address any remaining issues regarding the asserted ground of unpatentability based on Janik and Kehoe.” slip op. at 15
§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 7,079,864 - Broad Ocean Technologies, LLC v. Nidec Motor CorporationRehearing deniedPTAB · Feb 22, 2017 · IPR2015-01617 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving intact its decision that claims 7–13 were not shown anticipated by Beifus.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On rehearing, the burden of showing that the Decision should be modified lies with Petitioner, the party challenging the Decision. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- BurdenDecided for patent owner
“On rehearing, the burden of showing that the Decision should be modified lies with Petitioner, the party challenging the Decision. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“1 We do not disagree with Petitioner’s general contention that “a prior art reference’s disclosure of a non-anticipatory embodiment does not negate the invalidating effect under 35 U.S.C. §102 of any other anticipatory alternative embodiments.” Req. Reh’g 8–9 (citing Celeritas Techs., Ltd. v. Rockwell Intern. Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998); Upsher-Smith Labs., Inc. v. Pamlab, L.L.C., 412 F.3d 1319, 1322–23 (Fed. Cir. 2005); Paper 30, 15:10–16:2). Rather, we disagree that Petitioner has carried its burden of showing that Beifus discloses any anticipatory embodiment.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“reliance in its Reply on the reasoning of Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (Fed. Cir. 2015)” gave improper effect to an objection raised by Patent Owner during Petitioner’s redirect examination of Dr. Sidman. See Req. Reh’g 12–13 (“Patent Owner Nidec waived all its evidentiary objections to the redirect testimony of Dr. Sidman by not filing a motion to exclude” (citing 37 C.F.R. § 42.64(c))). This implication misconstrues the reasoning provided in the Final Written Decision. Rather, we determined that Petitioner’s reliance on Kennametal was improper because it was an argument not raised in the initial Petition. Dec. 18. Regardless of whether Patent Owner made an objection, and regardless of whether Patent Owner filed a motion to exclude based on such an objection, we are not absolved of our duty to guard against the improper presentation of shifting arguments that may unfairly disadvantage an opposing party. 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response.”) (emphasis added); CBS Interactive, Inc. v. Helferich Pat. Lic., LLC, Case IPR2013-00033, slip op. at 3 (PTAB Aug. 9, 2013) (Paper 79) (“Should there be improper arguments or evidence presented with a reply, the Board, exercising its discretion, may exclude the reply and related evidence in their entirety, or alternatively, decline to consider the improper arguments and/or related evidence.”). We recognize that Patent Owner addressed Kennametal in its Patent Owner Response, and, as a broadly general proposition, raising an argument in a Response may, without more, entitle a Petitioner to reply to it. But the specific circumstances in this case are not that simple.” slip op. at 7
§ 102 anticipationPatents in suitUS 7,990,092 - PTAB · Aug 1, 2016 · IPR2016-00520 · APJ David C Mckone · IPR · Rehearing
The Board denied Avigilon’s rehearing request, leaving its denial of institution for claims 1, 6-10, 16-24, and 28 in place because Petitioner did not show an abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that the Decision should be modified is on Petitioner, the party challenging the Decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- BurdenNot shown unpatentable
“must be considered at face value,” and that “[d]isputes over whether the support provided by the expert (whether based on his or her experience or a printed publication) are issues of credibility to be decided at trial, not at the institution stage.” Req. 6–7. Petitioner cites to no persuasive support for the proposition that we must, at the institution stage of a proceeding, simply accept unsubstantiated expert testimony. To the contrary, Rule 42.65(a) provides that “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“must be considered at face value,” and that “[d]isputes over whether the support provided by the expert (whether based on his or her experience or a printed publication) are issues of credibility to be decided at trial, not at the institution stage.” Req. 6–7. Petitioner cites to no persuasive support for the proposition that we must, at the institution stage of a proceeding, simply accept unsubstantiated expert testimony. To the contrary, Rule 42.65(a) provides that “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“expert cannot testify about the state of the art. Rather, we concluded, after considering the evidence Petitioner cited, that Petitioner was not reasonably likely to show that AXIS Manual inherently disclosed a Web browser directing a microprocessor to control an NIC. Dec. 20.” slip op. at 4
§ 102 anticipationPatents in suitUS 6,891,566 - TRW Automotive U.S. LLC v. Magna Electronics Inc.Rehearing deniedPTAB · Feb 8, 2016 · IPR2015-01450 · APJ Robert J Weinschenk · IPR · Rehearing
The Board denied TRW’s rehearing request, leaving in place the denial of institution because the Petition did not show the ’287 patent was prior art or establish a sufficient reason to combine the cited teachings.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“reasonable likelihood of prevailing in showing that U.S. Patent No. 6,445,287 B1 (Ex. 1012, “the ’287 patent”) is prior art because Petitioner did not show sufficiently that the ’287 patent lacks written description of the challenged claims of the ’659 patent. Dec. 6–9. We explained that the ’287 patent reasonably conveys that the console supported by attachment members in Figure 16B of the ’287 patent provides mounting surfaces for” slip op. at 2
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artDecided for patent owner
“A. The ’287 Patent as Prior Art In the Decision, we determined that Petitioner did not demonstrate a reasonable likelihood of prevailing in showing that U.S. Patent No. 6,445,287 B1 (Ex. 1012, “the ’287 patent”) is prior art because Petitioner did not show sufficiently that the ’287 patent lacks written description of the challenged claims of the ’659 patent. Dec. 6–9. We explained that the ’287 patent reasonably conveys that the console supported by attachment members in Figure 16B of the ’287 patent provides mounting surfaces for” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“use the camera in Schofield rather than the sensor in Klappenbach because the camera provides more functionality. Paper 2 (“Pet.”), 46–48. In the Decision, we explained that we were not persuaded by Petitioner’s argument because Petitioner only indicates why one of ordinary skill in the art would select the camera in Schofield over the sensor in Klappenbach, not why it would have been obvious to mount the camera in Schofield using the fastening device and housing in Klappenbach. Dec. 11–12. Petitioner argues that it was unreasonable for us to assume that one of ordinary skill in the art would combine Blank and Schofield without the fastening device and housing in Klappenbach because that would require “mount[ing] two rearview mirrors to the same windshield.” Req. Reh’g 12. Petitioner’s argument is not persuasive.” slip op. at 4
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,692,659 - TRW Automotive U.S. LLC v. Magna Electronics Inc.Rehearing deniedPTAB · Feb 8, 2016 · IPR2015-01426 · APJ Robert J Weinschenk · IPR · Rehearing
The Board denied TRW’s rehearing request, leaving in place the denial of institution for the challenged claims because TRW showed no overlooked or misapprehended error.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“reasonable likelihood of prevailing in showing that U.S. Patent No. 6,445,287 B1 (Ex. 1012, “the ’287 patent”) is prior art because Petitioner did not show sufficiently that the ’287 patent lacks written description of the challenged claims of the ’659 patent. Dec. 6–9. We explained that the ’287 patent reasonably conveys that the console supported by attachment members in Figure 16B of the ’287 patent provides mounting surfaces for” slip op. at 2
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artDecided for patent owner
“reasonable likelihood of prevailing in showing that U.S. Patent No. 6,445,287 B1 (Ex. 1012, “the ’287 patent”) is prior art because Petitioner did not show sufficiently that the ’287 patent lacks written description of the challenged claims of the ’659 patent. Dec. 6–9. We explained that the ’287 patent reasonably conveys that the console supported by attachment members in Figure 16B of the ’287 patent provides mounting surfaces for” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“use the camera in Schofield rather than the sensor in Klappenbach because the camera provides more functionality. Paper 2 (“Pet.”), 48. In the Decision, we explained that we were not persuaded by Petitioner’s argument because Petitioner only indicates why one of ordinary skill in the art would select the camera in Schofield over the sensor in Klappenbach, not why it would have been obvious to mount the camera in Schofield using the fastening device and housing in Klappenbach. Dec. 12. Petitioner argues that it was unreasonable for us to assume that one of ordinary skill in the art would combine Blank and Schofield without the fastening device and housing in Klappenbach because that would require “mount[ing] two rearview mirrors to the same windshield.” Req. Reh’g 12. Petitioner’s argument is not persuasive.” slip op. at 4
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,692,659 - TRW Automotive U.S. LLC v. Magna Electronics Inc.Rehearing deniedPTAB · Feb 8, 2016 · IPR2015-01428 · APJ Robert J Weinschenk · IPR · Rehearing
The Board denied TRW’s rehearing request, leaving institution denied because TRW did not show the ’287 patent lacked written description or adequately explain the proposed combinations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for patent owner
“reasonable likelihood of prevailing in showing that U.S. Patent No. 6,445,287 B1 (Ex. 1012, “the ’287 patent”) is prior art because Petitioner did not show sufficiently that the ’287 patent lacks written description of the challenged claims of the ’659 patent. Dec. 6–8. We explained that the ’287 patent reasonably conveys that the console supported by attachment members in Figure 16B of the ’287 patent provides mounting surfaces for vehicle accessories described in other embodiments in the ’287 patent, including a forward facing camera. Id. Petitioner argues that we misapprehended the disclosure of the ’287 patent. Req. Reh’g 2–11.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“use the camera in Schofield rather than the sensor in Klappenbach because the camera provides more functionality. Paper 2 (“Pet.”), 44–46. In the Decision, we explained that we were not persuaded by Petitioner’s argument because Petitioner only indicates why one of ordinary skill in the art would select the camera in Schofield over the sensor in Klappenbach, not why it would have been obvious to mount the camera in Schofield using the fastening device and housing in Klappenbach. Dec. 11. Petitioner argues that it was unreasonable for us to assume that one of ordinary skill in the art would combine Blank and Schofield without the fastening device and housing in Klappenbach because that would require “mount[ing] two” slip op. at 4
§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,692,659 - TRW Automotive U.S. LLC v. Magna Electronics Inc.Rehearing deniedPTAB · Feb 8, 2016 · IPR2015-01427 · APJ Robert J Weinschenk · IPR · Rehearing
The Board denied TRW’s rehearing request, leaving institution denied for claims 37, 41, 43, 45–48 and claims 6–10, 12, 13, 22, 27.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artDecided for patent owner
“reasonable likelihood of prevailing in showing that U.S. Patent No. 6,445,287 B1 (Ex. 1012, “the ’287 patent”) is prior art because Petitioner did not show sufficiently that the ’287 patent lacks written description of the challenged claims of the ’659 patent. Dec. 6–9. We explained that the ’287 patent reasonably conveys that the console supported by attachment members in Figure 16B of the ’287 patent provides mounting surfaces for” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“use the camera in Schofield rather than the sensor in Klappenbach because the camera provides more functionality. Paper 2 (“Pet.”), 48. In the Decision, we explained that we were not persuaded by Petitioner’s argument because Petitioner only indicates why one of ordinary skill in the art would select the camera in Schofield over the sensor in Klappenbach, not why it would have been obvious to mount the camera in Schofield using the fastening device and housing in Klappenbach. Dec. 12. Petitioner argues that it was unreasonable for us to assume that one of ordinary skill in the art would combine Blank and Schofield without the fastening device and housing in Klappenbach because that would require “mount[ing] two rearview mirrors to the same windshield.” Req. Reh’g 12. Petitioner’s argument is not persuasive.” slip op. at 4
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,692,659 - TRW Automotive U.S. LLC v. Magna Electronics Inc.Rehearing deniedPTAB · Jan 20, 2016 · IPR2015-00972 · APJ Robert J Weinschenk · IPR · Rehearing
The Board denied TRW’s rehearing request, leaving institution denied for claims 1, 3, and 90–92 because the petition did not sufficiently establish prior art or obviousness.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artDecided for patent owner
“reasonable likelihood of prevailing in showing that U.S. Patent No. 6,445,287 B1 (Ex. 1012, “the ’287 patent”) is prior art because Petitioner did not show sufficiently that the ’287 patent lacks written description of the challenged claims of the ’659 patent. Dec. 6–9. We explained that the console supported by attachment members in Figure 16B of the ’287 patent provides mounting surfaces for vehicle accessories described in other embodiments in the ’287 patent, including a forward facing camera. Id. at 8–9. Petitioner argues that we misapprehended the written description requirement and the disclosure of the ’287 patent. Req. Reh’g 2–9.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“alleged error of law. Id. at 9–11. Moreover, our determination that the ’287 patent contains sufficient written description of the challenged claims of the ’659 patent is not inconsistent with our determination regarding the proposed combination of Schofield and Klappenbach. As an initial matter, the standard for satisfying the written description requirement is not the same as the standard for showing that it would have been obvious to combine the teachings of various references. Further, as discussed above, we determined that the ’287 patent reasonably conveys that the console in Figure 16B can be used to mount the forward facing camera described in another embodiment in the ’287 patent. See supra Section II.A. We did not combine Figures 15, 16B, and 24A of the ’287 patent.” slip op. at 4
§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,692,659
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.